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Securing Trademarks and Domain Names

Post about USA trademark issues

Securing Trademarks and Domain Names

Postby Pinskylaw.ca » 29 Nov 2015, 11:48

1. Common Law Rights

In the United States, rights to a trademark arise from use in the ordinary course of business. This protection, known as common law protection, is limited to the geographic area in which the trademark is actually being used. Use must be in the ordinary course of trade and not merely to reserve a right in a mark. Mere selection of a trademark is not enough. Even if a trademark is not used directly on a product, use in advertising or promotion of a product may be sufficient to establish prior rights in the trademark.

Unlike trademarks, rights to domain names only accrue upon registration. It is therefore important to search for and register a domain name as soon as use is contemplated. In order to keep cybersquatters at bay, it may also be useful to register domain names consisting of or including variations of important trademarks, such as common misspellings and translations into foreign languages. It is also possible to apply for federal trademark registration of a mark consisting of a domain name, if that domain name is used as a trademark and not merely as an Internet address.

2. Should Federal Registration Be Pursued?

Federal registration offers many procedural and substantive. The owner of a federal registration may sue for infringement in federal court, and will enjoy the presumptions that (1) the mark is valid, (2) the registrant owns the mark, and (3) the registrant has the exclusive right to use the mark. The registration also provides constructive notice of the registrant's claim of ownership as of the application date. In addition, the owner of a federally registered trademark can obtain the help of the U.S. Customs Service to stop counterfeit goods from entering the United States.

3. Registration Process

A trademark application may be filed in the United States on the basis of use, a bona fide intention to use a mark, or based on a foreign application or registration. The application must list the particular goods and services included in the application, divided into the international classes the particular goods or services fall. For example, computer software is in class 9, while a website which allows the trading of stock is in class 36. A magazine would be in class 16, but an online magazine would be in class 42. There is a filing fee of $325 per international class. The international classes can be found at http://www.uspto.gov in the trademark section of the USPTO website.

An application filed after use of the mark has commenced in commerce is called a "use-based" application. For a use-based application, the applicant must submit a specimen of use. For a trademark, such specimen may be a label or hangtag displaying the mark. An advertisement or promotional material is unacceptable. For a service mark application, on the other hand, advertising or promotional material for the service displaying the mark is acceptable. The application must also set out the date of first use of the mark.

In order to file an intent-to-use (ITU) application, before use of the mark in commerce has commenced for all the goods and services set out in the application, the entity must allege a bona fide intent to use the mark in commerce for specific goods or services and not merely the need to reserve a right in a mark. Filing on an ITU basis establishes a constructive use of the mark as of the filing date of the application and confers upon the applicant a nationwide right of priority as of the filing of the application, once the registration issues. However, for a U.S. company, a registration will not issue until the mark is used on all the goods and services claimed on the registration.

In addition, a foreign entity from a country which is a signatory to the Paris Convention or a separate treaty with the United States may apply to register its mark in the United States based on an existing foreign registration of the mark in the entity's home country or on the basis of a prior-filed foreign application for the mark, if the U.S. application is filed within six months of the foreign application.

An alternative to federal registration is state registration. State statutory protection is obtained by filing an application with the desired state trademark office. The application process for a state registration is generally faster and less cumbersome than the federal application process, as there is almost no examination. The key value of a state registration is that it is available for marks only used in a single state, which may not be federally registrable because it is not being used in interstate commerce as required under federal law. The protection provided by a state registration does not extend beyond the state boundaries, is more limited in scope than a federal registration, and does not carry the presumptions of a federal registration. Generally an application for state registration is filed if the applicant does not have use of the mark in interstate commerce or wishes to secure registration rights, albeit limited, quickly. The cost for securing a state registration is typically small ($50-$100).

4. Maintaining Existing Registrations

To maintain rights in a mark in the United States, the mark must be used in commerce for the duration of the registration. Evidence of use, in the form of section 8 declarations, must be filed during the fifth year after registration issues, and every ten years after the registration issues. If these filings are not made, the registration will be cancelled. In addition, any time after five consecutive years of use after a registration has issued, an optional so-called "Section 15 declaration" attesting to the continuous, uninterrupted use may be made, which will provide the registration with incontestability status. Although there are some exceptions and defenses, an incontestable registration generally constitutes conclusive evidence of ownership and exclusive right to a mark, and prevents adverse parties from attacking the registration on the bases of prior use and descriptiveness. Because of these benefits, it is important to make this filing as soon as the requirements have been met, normally at the beginning of the fifth year of the registration
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